Generic vs Descriptive Trademarks

  • By:Kelvin Wibawa
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Article 20 of Indonesian Trademark Law 20/2016 describes how a trademark can not be registered if it merely describes the goods or services being offered under it. Names can be considered descriptive for two reasons. The word can already be found in the dictionary as being a definition of the goods and services a party intends to offer under the trademark. But the mark name can also start as a meaningless word but grow out to become the commonly accepted definition of the goods and services in case.

Relation between the trademark and the goods/services offered

Why can a global tech giant sell its computers and smartphones under the trademark APPLE, but will a local fruit store’s application for registration of this mark be rejected? The answer has to do with the degree of descriptiveness of the mark in relation to the goods or services being sold under it. While apples are literally what a fruit store sells, the word ‘apple’ would normally not make people think of computers and smartphones – like how no one would imagine a new car when hearing the word ‘fish’.

Descriptive marks

The outcome of such cases is harder to predict in Indonesia. This is well illustrated by Supreme Court verdict 179 PK/PDT.SUS/2012, or the ‘KOPITIAM-case’. At first sight, the trademark KOPITIAM occurs to consist of two descriptive words; ‘kopi’, Indonesian for coffee, and the Hokkien word ‘tiam’ – which means as much as ‘shop’ and is widely understood in especially western Indonesia. The word ‘kopitiam’, in other words, can be translated as a coffee shop. Any party wishing to have the trademark COFFEESHOP registered in an English-speaking country for his coffee bar would as good as sure receive a rejection from the relevant authorities. Yet Indonesian businessman Abdul Alex Soelysto did manage to obtain registration for his trademark KOPITIAM. On top of that, in 2013 he won an important case before the Supreme Court, in which a competitor was ordered to stop using his trademark KOK TONG KOPITIAM.    

read also : Things You Should Know About Trademark in Indonesia

Generic marks         

To summarize; descriptive marks are words that were already in use to describe the goods and services the trademark’s creator wants to have his mark protected for. Generic names on the other hand were non-existing words or words with completely different meanings at the time of their registration. Marks that fall into this category became so well-known among the general public, that they have become the definition of the goods or services in question – and therefore lost their status as protected trademarks. A globally well-known example of this is the word ‘trampoline’. The device was invented in the United States in 1936, and back in the days was described as a ‘rebound tumbler’. Its inventor came up with the word ‘trampoline’ somewhere in the ‘40’s, and as this word did not have any meaning, managed to have it registered as a trademark. Little did he know that his word would become so famous people from all over the world would use it to refer to similar jumping apparatuses. This resulted in the name TRAMPOLINE losing its protected status in jurisdictions all over the world, meaning any manufacturer of trampolines can sell his products under this name nowadays. Trademark Law 20/2016 Article 22 explicitly allows for the registration of trademarks containing generic names, provided enough additional wording is added to make them substantially distinctive.

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